Nontraditional Marks in the Asia-Pacific Region

Malaysia’s new Trademark Acts 2019 came into force at the end of December 2019, and specifically provided for the recognition of nontraditional trademarks for shape, color, scent, and sound. This is a huge step forward for the jurisdiction, where owners of nontraditional marks (NTM) have long dealt with low to nonexistent levels of protection. At the end of 2019, the Non-Traditional Marks Committee, Asia-Pacific Subcommittee, researched the current broad “state of play” for protection of NTMs in its region. The purpose of this article is to provide a timely yet brief discussion of those results and provide observations.

The research was conducted in-house by members of the Committee, on a voluntary basis. Not all jurisdictions in the region are covered. We obtained information for Australia, China, Hong Kong, Indonesia, Japan, Malaysia, New Zealand, Singapore, Taiwan, and Thailand. Notable absences are the smaller Pacific Islands, such as Fiji, Tonga, and Papua New Guinea, as well as some larger economies, such as Vietnam, South Korea, and the Philippines.

We posed three groups of questions to our experts within each of the 10 jurisdictions represented.

1. Can NTMs which are otherwise inherently nondistinctive, and therefore difficult to register, be accepted based on acquired distinctiveness? If so, what types of marks can be registered based on acquired distinctiveness and what types of evidence can and should be submitted? Provide examples of NTMs that have been accepted in your jurisdiction based on acquired distinctiveness.

Pleasingly, all countries other than Indonesia (see below) indicated they did (or soon would) provide protection for a wide variety of NTMs and allowed owners to support their applications with evidence of acquired distinctiveness. The degree of ease with which owners could register their NTMs did, as you would expect, vary.

Indonesia theoretically allows for the registration of NTMs, but in practice it is difficult to register them. This is because owners may not support their application with evidence of acquired distinctiveness. Instead, the NTM must be inherently distinctive at the time it is filed. Local advice is to add a distinctive element (such as a label to a bottle shape mark), but of course that will drastically reduce the level of protection afforded. And is, therefore, less than ideal.

Back to those jurisdictions that allow for supporting evidence, it was generally required to be presented in the form of an affidavit or statutory declaration (or equivalent) and should include country-specific information such as:

• Date of first use;
• Annual advertising expenditure;
• Annual revenue;
• Market share;
• Examples of the mark being used;
• Promotional materials; and
• Survey evidence of consumer recognition.

Of particular interest was the helpfulness of providing evidence that owners of NTMs have spent time and money educating their customers (and the public) about the trademark significance of their NTMs. An example was promotional materials that highlight the shape of the mark or the colors as a trademark. This might even include explicit statements in advertising such as “when you see yellow, you know it is us” (my words).

2. How are the legal tests for infringement interpreted when comparing NTMs to traditional marks? For example, if you have a 3D mark registered but someone is using a 2D mark, can this be an infringement? If an NTM combined different elements such as shape, sound, and color, will use of only one of those elements infringe it?

All the countries that provide for registration of NTMs also provide for their infringement. However, there appear to be no widespread NTM-specific infringement provisions. Instead, owners of NTMs must rely on the usual trademark infringement provisions. And this, combined with the lack of significant case law, means the answer to these questions for most jurisdictions was a firm “maybe.”

This is not unreasonable. NTMs should perhaps not get additional protections. But, equally, in a region with very little widespread significant case law concerning the infringement of NTMs, a lack of legislative guidance could lead courts to be unwilling to find infringement. Or at least to try and find ways to avoid the issue.

Other than Indonesia (which has very few NTMs to enforce), Hong Kong and Singapore seemed the least likely to interpret their laws broadly, to grant strong enforcement rights for NTMs. Experts in these countries seemed to feel the little case law that did exist suggests 2D and 3D marks may not infringe each other and that NTMs containing multiple elements, such as shape, color, and position, would be difficult to enforce against someone using only one of those elements. That’s not to say other countries were better. Just that the language used suggests there is more scope for possible success elsewhere.

One fact that creates difficulty here is that not all NTMs are the same. We use the term loosely to refer to anything that is not a word or logo, etc. But there are so many different types of NTMs (shape, sound, color, smell, position, hologram, taste, animation) and it is difficult to imagine the verbose response that would be required from legislatures to fully codify this. Perhaps it is better to leave that to the courts to develop over time.

It probably falls to us and to the IPOs to support the smaller economies and less developed IPOs. In fact, it is likely this will become, if it has not already become, a geopolitical issue. Think China’s Belt and Road Initiative.

3. Have NTMs been successfully enforced in infringement proceedings in your jurisdiction? If so, please provide examples of the registered NTM and the mark that was held to infringe it.

About half the countries seemed to have decent case law, albeit not much of it. However, there was a lot of comment about where countries will look absent local common law precedent. Many of them suggested they would look towards the United Kingdom for support.

Conclusions

The Asia-Pacific region is one of the most diverse on the planet, both economically and legally. It contains a wide variety of systems for the recognition, protection, and enforcement of NTMs. The legislatures and courts of some countries are pushing forward with quite liberal, and forward thinking, legal developments, whilst others are towing the proverbial anchor a little bit.

For owners of NTMs, the immediate path forward will be to support your applications with evidence of acquired distinctiveness. You need to establish an early plan for how you will use the NTMs to put yourself in the best possible position to own them in the future, after they have been in market for a few years.

In the medium to long term, the local IPOs will continue to engage with each other, and with the local judiciary and legislature. INTA continues to support this multilateral work by organizing events and facilitating dialogue.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

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